Appeal No. 2000-0316 11
Application No. 08/587,821
disclosure in Stoesser of the presence of hydrofluoric acid or fluoride salts. Nonetheless, it
is the examiner’s position that the combination would have been obvious. See our
discussion supra. We disagree.
Although, the processes of both references are directed to increasing the
penetration of subterranean oil well formations, the processes are otherwise unrelated.
Kalfayan is directed to a silane or silane ester treatment followed by the addition of either
mineral acid or organic acid together with hydrofluoric acid. When hydrochloric acid is
present, there is no low molecular weight acid present. In contrast, the disclosure of
Stoesser, discloses neither fluoride ion nor hydrofluoric acid as being present in the
composition. Accordingly, we conclude that the disclosure of Stoesser is unrelated to the
teachings and disclosure of Kalfayan.
Based upon the above analysis, we conclude that the examiner has failed to establish
a prima facie case of obviousness, there being no reason to combine the references to
Kalfayan and Stoesser. The combination of the references is viable only in view of the
disclosure presented by the appellants. See In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best defense against the subtle but
powerful attraction of a hindsight-based obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art references").
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